Ex Parte Roberts et alDownload PDFPatent Trial and Appeal BoardMay 30, 201713276452 (P.T.A.B. May. 30, 2017) Copy Citation United States Patent and Trademark Office UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O.Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/276,452 10/19/2011 O. Michael Roberts 2669.P0001US 1957 23474 7590 06/01/2017 FLYNN THIEL BOUTELL & TANIS, P.C. 2026 RAMBLING ROAD KALAMAZOO, MI 49008-1631 EXAMINER ISLAM, SYED A ART UNIT PAPER NUMBER 3636 NOTIFICATION DATE DELIVERY MODE 06/01/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): DOCKET@FLYNNTHIEL.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte O. MICHAEL ROBERTS and THOMAS WELLS BRIGNALL JR. Appeal 2016-000536 Application 13/276,452 Technology Center 3600 Before THOMAS F. SMEGAL, LISA M. GUIJT, and JEFFREY A. STEPHENS, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s decision2 rejecting claims 1—6, 8, 9, 13, 16—19, and 21.3 Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). 1 Appellants identify the real party in interest as Glow Light Emergency Exit Products, LLC. Appeal Br. 1. 2 Appeal is taken from the Final Office Action dated October 28, 2014 (“Final Act.”), as supplemented by the Advisory Action dated February 5, 2015 (“Adv. Act.”). 3 Claims 7, 10—12, 14, 15, and 20 have been cancelled. See Amendments dated May 28, 2013; Feb. 3, 2014; Jan. 28, 2015; Adv. Act. 1 (entering amendment). Appeal 2016-000536 Application 13/276,452 We REVERSE. CLAIMED SUBJECT MATTER Claims 1 and 18 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A photo-luminescent sign comprising: a front panel comprising at least one photo- luminescent member which is energizable by exposure to a light source, the photo-luminescent member comprising a thermoplastic polymer and a photo-luminescent material having an average particle size in the range of about 30 microns to about 40 microns and being capable of emitting light visible by the human eye; a lengthwise rear panel disposed adjacent to and behind the front panel; a frame attached to both the front panel and the rear panel, the front panel, rear pane, and frame together defining a housing; a light source within the housing and positioned not immediately adjacent the at least one photo-luminescent member such that the light source may be used to energize at least a portion of the photo-luminescent member; and a power converter capable of converting both 120-volt electricity and 277-volt electricity to a 12-volt output, the power converter in electrical communication with the light source, the photo-luminescent member when energized is seen at least 100 feet away from the sign for at least 90 minutes without the use of electricity. 2 Appeal 2016-000536 Application 13/276,452 REJECTIONS I. Claims 1—4, 6, 8, and 17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Robinson (US 2006/0225326 Al; published Oct. 12, 2006), Kohn (US 5,279,058; issued Jan. 18, 1994), and Hamrick (US 7,114,840 B2; issued Oct. 3, 2006). II. Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Robinson, Hamrick, Kohn, and Nicolaas (US 2006/0016109 Al; published Jan. 26, 2006). III. Claims 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Robinson, Hamrick, Kohn, and Schoniger (US 5,027,258; issued June 25, 1991). IV. Claims 13 and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Robinson, Kohn, Hamrick, and Schoniger.4 V. Claim 18 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Li (US 7,937,865 B2; issued May 10, 2011) and Kohn. VI. Claims 19 and 21 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Li, Kohn, and Robinson. ANALYSIS Regarding the Examiner’s rejections of independent claims 1 and 18, 4 Although the Examiner’s rejection of claims 13 and 16 is based on Robinson and Schoniger alone, claims 13 and 16 depend from independent claim 1, which is rejected in view of Robinson, Kohn, and Hamrick; thus, we understand the Examiner’s omission of Kohn and Hamrick in the statement of rejection for claims 13 and 16 to be a typographical error. 3 Appeal 2016-000536 Application 13/276,452 the Examiner determines that neither Robinson nor Li disclose “a photo- luminescent material having an average particle size in the range of about 30 to 40 microns,” as claimed, and in both rejections, the Examiner relies on Kohn for such a disclosure, reasoning that it would have been obvious to use Kohn’s teaching to “use 30 to 40 microns particle size” in the inventions of Robinson and/or Li “to produce a brighter lamination in low [light] condition with low cost.” Final Act. 5—6, 10. Appellants argue that Kohn is not analogous art, and therefore, improperly relied upon in the Examiner’s rejections. Appeal Br. 6—7; Reply Br. 1. Appellants submit that Kohn’s field of endeavor is “a phosphorescent identification device, i.e., a sticker, for distinctly marking objects such as cassette tapes,” and therefore, Kohn is not in the same field of endeavor as the claimed invention, which is “photo-luminescent signs.” Appeal Br. 6. Appellants also note that “Kohn[’s] device does not include a light source.” Id. Appellants further submit that the problem addressed by the inventors of the claimed invention is “illuminating an area, such as an area of a building, for a significant amount of time at a significant distance without the use of electricity in the case of a power outage,” whereas “the problem addressed by [Kohn] is to provide an identification device that has a phosphorescent pigment that can be marked on for identification such as by the use of a writing instrument,” and “[m]ore specifically, . . . finding a suitable substance that would not smudge or erase writing thereon when handled.” Id. 4 Appeal 2016-000536 Application 13/276,452 The Examiner responds that because Robinson and Kohn “are directed toward indicia with photo-luminescence property which will absorb light” and “indicia that will glow and can be seen by a user in low light condition,” Kohn is analogous art. Ans. 5. The Examiner also determines that “both the inventions of Li and Kohn are directed toward indicia with photo-luminescence property which will absorb light,” and “that will glow and can be seen by a user in low light condition.” Id. at 6. However, The Examiner’s comparison between the prior art references themselves is not relevant to the test articulated by our reviewing court. As correctly applied by Appellants, the Federal Circuit has laid out two separate tests to determine whether a reference is analogous art to the claimed invention: “(1) whether the art is from the same field of [the inventor’s] endeavor” and “(2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); see also In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). The Federal Circuit further instructs that a determination of the field of the endeavor should consider “explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.” See Bigio, 381 F.3d at 1325. “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to 5 Appeal 2016-000536 Application 13/276,452 an inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). We agree with Appellants that the field of endeavor of Kohn (i.e., phosphorescent identification devices) is not the same as the field of endeavor as the claimed invention (i.e., luminescent signs). Regarding the second test, the Specification identifies particular problems with which the inventors of the claimed subject matter were involved in designing a sign that functions “during a power outage, passes rigorous safety standards, and can be seen 100 feet away.” Spec. 1 5; see also Decl. of Thomas Brignall dated Jan. 31, 2014, p. 3 (“the problem to be solved was how to incorporate a smaller particle size illumination material, and yet have sufficient light absorption and discharge over time such that the sign [would be] visible at 100 feet for 90 minutes without AC electricity.”). Kohn involves phosphorescent markings to enable articles to be seen in the dark, which are convenient to make and apply, and which provide a continuously extending glowing area that may receive ink. See, e.g., Kohn 1:9—13, 29-30, 36—37. In particular, Kohn’s invention involves “a matt phosphorescent pigment coating continuously and uniformly applied . . . whereby a mark can be made . . . with a writing instrument, such as a pen, pencil, marker or the like.” Id. at 1:22—25. Regarding the matt finish, Kohn discloses that [o]n smooth glossy surfaces such as plastic film, such inks can be removed by rubbing with a dry eraser such as cloth or paper tissue. On the matt permanently ink receptive phosphorescent 6 Appeal 2016-000536 Application 13/276,452 pigment coating, however, the ink forms an indelible marking so that the marking will not be erased by handling by the user in the dark or under low light level conditions. Id. 2:29—36. As relied on by the Examiner as set forth supra, Kohn discloses that “[a] matt finish is also favoured by using particles which are of relatively large size,” wherein “the average particle size is about 15 to about 45 microns.” Id. at 3:52—56. Thus, we determine that Kohn’s teaching to use a certain particle size to form a matt finish for a phosphorescent coating to enable ink reception, such that an item may be handled and identified in the dark, at close range, is not reasonably pertinent to the particular problems faced by the inventors, for example, designing a sign that functions during a power outage, passes rigorous safety standards, and can be seen 100 feet away. In other words, the matter with which Kohn deals (i.e., creating a matt finish for receiving ink) logically would not have commended itself to Appellants’ attention when considering the problems they faced in designing a sign, which does not include the creation of a matt finish as a design factor. Because Kohn is not analogous art to the claimed invention, the Examiner improperly relied upon Kohn in the rejection of claims 1—6, 8, 9, 13, 16, 17—19, and 21 under 35 U.S.C. § 103(a). 7 Appeal 2016-000536 Application 13/276,452 DECISION The Examiner’s rejections of claims 1—6, 8, 9, 13, 16, 17—19, and 21 under 35 U.S.C. § 103(a) are reversed. REVERSED 8 Copy with citationCopy as parenthetical citation